Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 31 May 2004

Not content with beseiging the lobbies of Brussels, Europe's intellectual property owners are now campaigning to get the enlarged Continent's normally apathetic voters involved. The Campaign for Creativity claims that at least 17,000 jobs a year are lost through the ineffective enforcement of intellectual property rights in Europe. If you want to get the European Parliament to do anything about it, contact your local MEP candidates and see how tough a line they're prepared to take.

The IPKat is surprised that the figure for lost jobs is so low, given the high level of losses which are estimated as being attributable to intellectual property infringement.

The "essential function" of the trade mark is a concept in European trade mark law that has featured prominently in European Court of Justice jurisprudence since the 1980s. We all know that the essential function is

"to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin" (Case C-206/01, Arsenal v Reed, at para.48).

One final year Law student at University College, London, was not impressed by this. When answering a question in this year's Finals, he explained that the "essential function" of the trade mark was

"to enable the proprietor of a trade mark to obtain a monopoly in it".

Who says students are too steeped in theory to be able to understand the practicalities of commercial life!

The IPKat asks if anyone browsing the blog has a definition of the "essential function" that can cap this one for accuracy and succinct expression. If so, please post it below. A small prize is on offer for the best non-anonymous suggestion.

The BBC reports that Barbara Streisand has lost her privacy suit against Kenneth Adelmann, a retired software engineer, and must now pay his expenses. Ms Streisand had sued Mr Adelmann for $10million after he posted aerial photographs of Streisand’s Malibu mansion on a conservation website. Adelamann has said that he was posting the photographs as part of a complete photographic record of the Californian coastline and that, since Streisand’s house was on the coast, it was part of the project. Her fame, he argued, did not entitle her to special treatment. Streisand however claimed that her safety was put at risk since the pictures, which showed details of her estate that could not be seen from the street, could worsen an already existing problem with stalkers.

While the IPKat acknowledges that conservation projects and the like can be important and celebrities should not be entitled to put a stop to them just because their property is involved, he feels that there is a good reason for according celebrities special treatment where their safety is at risk.

Sunday, 30 May 2004

Adweek reports that Miller is bringing an action in the US against Anhauser-Busch. Miller, brewers of Miller Lite claims that wholesalers or employees of Anheuser-Busch, brewers of Budweiser, placed company ads onto or into Miller product packaging. The materials include 3-by-5-inch cards describing Miller Lite as the "Queen of Carbs" and "owned by South African Breweries." According to the suit filed in Wisconsin, these actions involved “false, unfair or illegal advertising tactics” since the beer is not high in carbohydrates and there is not such company as South African Breweries.

The IPKat doubts that such an action could fit within the UK definition of passing off, but feels that, if the claims are true, there would be a good argument for branding it unfair competition.

Saturday, 29 May 2004

The Register reports that a student who was booted off his degree course for plagiarism is to sue the university. He says tutors at the University of Kent should have spotted what he was doing and stopped him sooner. Michael Gunn, a 21-year-old English student, freely admitted using material downloaded from the internet to complete his assignments. He told The Times newspaper:

"I hold my hands up. I did plagiarise. I never dreamt it was a problem".

His problem, then, is not that he was caught, but that he was caught too late. He argues that the university should have warned him of the consequences earlier.

"I can see there is evidence I have gone against the rules. But they have taken all my money for three years and pulled me up the day before I finished. If they had pulled me up with my first essay at the beginning and warned me of the problems and consequences, it would be fair enough".

University authorities wouldn't comment directly on the case but stressed that the university’s policy is very clear on the subject. David Nightingale, the deputy vice-chancellor said:

"All students are given clear guidelines as well as practical advice and support as to what constitutes plagiarism. These spell it out that it is not acceptable under any circumstances."

The IPKat has little sympathy for Gunn’s position, but wonders whether the University is as worried about the originality of its own lectures as it is about the originality of its students' essays.

Essay banks here and hereCheating at university hereDéjà vu hereTen ways to cope with boring lectureshere

Friday, 28 May 2004

The Register reports that Lindows has won a minor victory in the Netherlands. Judge Sj. A. Rullmann has held that Lindows is entitled to use the word “Lindows” as a company name. Although the company changed the name of its operating system in the wake of a challenge by Microsoft, based on Microsoft’s Windows operating system, it retained Lindows as its company name. It appears that it has now been vindicated in this decision.

The IPKat thinks that although this is good news for Lindows, it may not be of much use to them, since the real selling point of the Lindows name is the parallel it draws between the Linux-based product and the Windows operating system. Unless Lindows can be used as a trade mark for operating systems, this parallel cannot be directly drawn.

The May issue of the Sweet & Maxwell publication European Copyright and Design Reports has now been published. This issue of the ECDR carries, among other things, English translations of the following cases:

The IPKat has recently come across an interesting and provocative book, Freedom of Commercial Expression, published by Oxford University Press (355pp, hardback, £45). It has been written by Roger A. Shiner. Professor Shiner, who spent almost all his career as a philosopher at the University of Alberta, also deployed his talents as a lecturer in jurisprudence in that university’s Faculty of Law. This book is part of the fruit of his legal labours.

Professor Shiner notes that the courts in the United States, Canada and Europe currently grant constitutional protection to commercial advertising: but what is the legal and the philosophical basis for protecting the for freedom of commercial expression? Subjecting this topic to critical analysis, Shiner argues that the institutional history of such protection is one of ad hoc, not logical, development. He goes further and concludes that, even in terms of liberal democratic theory, freedom of commercial expression cannot be justified as a constitutional right. This conclusion will no doubt give rise to substantial anxiety on the part of those who rely upon it (comparative advertising and the use of sex in advertising are just two areas in which IPKat readers will recognise significant and difficult problems in need of solution). It is fair to suggest, however, that Professor Shiner is more interested in public clogs upon commercial expression (such as tobacco advertising) rather than private restrictions such as those based on trade mark rights or copyright.

Another trade mark case has found its way on to the ECJ website but without an English version: Peak Holding AB v Axolin Elinor AB. This is an Opinion of Advocate General Stix-Hackl on a reference concerning Article 7(1) of the trade mark harmonisation directive (Council Directive 89/104), which deals with exhaustion of rights. Does anyone know what it's about? Nb It's not available in Danish, Greek, Dutch, Finnish or any of the nine languages of the new Accession States.

Tuesday, 25 May 2004

From today's Telegraph, a cute little snippet. High fat, low sugar versions of Nestlé confections KitKat and Rolo are being launched to cash in on the fashion for the Atkin's diet. Nestlé say that these products are the first to be aimed at the three million people on the Atkins diet. A standard two-fingered bar of KitKit has 106 calories, 5.5g of fat and 13g of carbohydrates, while the new "low carb" version has 92 calories, 6.6g of fat and 5.9g of carbohydrates. Says Sam Hunter, of Nestlé Rowntree:

"We are the first British confectionary company to develop a low-carb alternative that doesn't compromise in taste."

The sweets should be in the shops in July.

The IPKat, having read the trade marks directive and the misleading advertising directive, is confident that Nestlé -- while neither seeking permission nor parting with any money -- should be able to describe their products as Atkin-compatible without running any risk of legal action from the rights owners in the word ATKINS NUTRITIONAL APPROACH. He will not however be going on the KatKin's Diet himself.

It is no secret that the IPKat has campaigned for the availability of the European Court of Justice's cases in all official European languages, as well as for the greater accessibility of ECJ and Court of First Instance decisions in general. Today the IPKat decided to take a trip through the European Union's website, in search of legal decisions.

The site opens up promisingly enough, with gateways to EU information in all 20 languages. Click through to a list of things that the EU does and you find no reference to the ECJ, but if you slide your cursor across a row of small and easy-to-miss tabs, the tab marked Institutions will take you through to the ECJ. Click on European Court of Justice and you gain access to generalised information concerning that institution as well as the case law data (third heading down on the left, under Information.

At this point, there is little to guide the visitor to the site, except trial and error. Click Annotations of Case Law and you hit a feature which is announced as being only in French. If you want to find the cases themselves, it is necessary to click through to Search Forms, and then again to the search form for ECJ and CFI cases.

At this point, you can search for cases under Case Number, Date, Name of parties or Subject-Field, as well as by words used in the text of individual judgments. Subject-field is a nightmare, since intellectual property cases may be found under any one of several different fields: agriculture (as in cases involving geographical appellations for regionally-grown products), approximation of laws (anything to do with harmonisation of IP rights), Community trade mark (that speaks for itself), Competition (where an IP right is abusively exercised), free movement of goods (where an IP owner seeks to prevent parallel trade), intellectual property (that also speaks for itself) and plant varieties).

When a search throws up one or more cases as being relevant, you can click on it and be taken straight through to its full text (if that text is available in the language of your search) or to a list of languages other than your own in which the text is available. That list still comprises just 11 languages. Judgments are not yet available in the nine languages of the Accession States and, in the case of Maltese, the IPKat suspects they never will be. The non-availability of key decisions in English and other languages has been the subject of the IPKat's Translation Watch.

Other features of the ECJ site that should be noted are the diary, which lists the date and time of Hearings, Opinions and Judgments for the coming weeks, as well as short-form notes on recent proceedings (this service appears to end at 2003). It is also possible to access ECJ cases by case number.

All in all, the ECJ website provides a wealth of legal material. But you have to be prepared to make the effort to find your way around it.

The Lindows saga rolls on as the Register reports that Microsoft has been refused permission in America to appeal against an unfavourable decision. Therefore, the case will proceed to the district court in Seattle in the second half of this year. The most recent appeal confirms the lower court’s decision that, in deciding whether WINDOWS is generic, the court should look at the perceptions of consumers in 1985, when Microsoft Windows first became available to consumers, rather what it meant to consumers today. Lindows has stopped using the name Lindows during the trial but the case continues nonetheless.

The IPKat is rather surprised by this approach. Whatever the situation was in 1985, today consumers expect WINDOWS to be connected to Microsoft and they may well suffer deception if this present connection is not recognised and protected.

Monday, 24 May 2004

The IPKat is pleased to announce that OHIM has decided its first ever registered Community design case, this being a successful application to cancel a design right granted in respect of a chair with an elliptical seat and back. The ground of cancellation was that there was a conflict between that and an earlier national design for a chair. Thanks to John Cahir for bringing this to the IPKat's attention.

The BBC reports that the Thorpe Park amusement park has played host to a record-breaking group of students who staged the world’s largest naked rollercoaster ride. The theme park offered a £1,000 prize for the best group picture on board its Nemesis Inferno ride, which is celebrating its 25th anniversary. 81 students rose to the challenge, though only 28 were included in the official count, since the ride can only take that number in one go. The stunt will now be officially recorded in the Guinness Book of World Records as “Most Naked People on a Rollercoaster”.

The IPKat, ever a follower of contemporary art, wonders if, Spencer Tunick, famed for his photographs of nude people in urban settings, might not have something to say about this.

Sunday, 23 May 2004

The Sunday Telegraph reports that Antonia Stradivari, the last descendant of the Italian master violin-maker Antonio Stradivari to bear his name, has embarked on a mission to stop their shared name being "usurped" for what she considers to be unseemly commercial use. Antonia, a children's theatre director from the violin-maker’s town of Cremona, said that she was sick of seeing her unusual surname, a byword for perfection, "misappropriated by estate agents, dog breeders, and prosciutto (cured ham) makers". In a test case in the Italian courts last week, she reportedly obtained an order compelling Immobiliare Stradivari Snc, a Cremonese estate agent, to drop the word "Stradivari" from its title. She is threatening similar action against anyone else misusing the name.

"At first it did not bother me to find the name being used for almost everything and anything. Sometimes it even seemed funny. Companies ripping off the name are springing up like mushrooms, to the point where my ancestor will be turning in his grave".

In his Cremona workshops Antonio Stradivari (1644 to 1737, better known by his latinised tag Stradivarius) made 1,100 violins, cellos and violas, the finest of which fetch up to £1 million. His workmanship is credited with bringing the violin to perfection.

Antonia’s critics accuse her of wanting to charge a fee for the use of her surname, which she denies:

"Nor am I seeking publicity. All I want is for the name to be removed where it is improperly used."

She lists a number of companies and products with no connection to music whose use of the name she objects to: a cat and dog breeding business in Milan, a sofa company and a shop in Cremona selling "prosciutto Stradivari". She says she has less objection to a restaurant-boat with dancing in the Emilia Romagna region, called the Stradivari, or a Stradivari sports centre in Cremona:

"To name a boat after a person is a kind of honour, and there's nothing wrong with naming a sports centre after someone. But to call a cured ham or a cat and dog breeders after them is a dishonour for a name. I am the last Stradivari and so for me this hurts all the more."

The regional court which backed Ms Stradivari, and also ordered the offending estate agent to pay her legal costs, said that she was entitled to protect her own name, whether or not she was descended from the original violin-maker.

The IPKat, whose ancestors escaped being used as cat-gut in Stradivari’s violins, is astounded at the breadth of relief the Cremona court is apparently providing to claimants with surnames but no trading interest and no palpable claim to the invasion of any of their privacy or publicity rights. This decision surely can’t be right. If it is, the IPKat wonders, is it totally out of step with the relief available in the 24 other EU member states.

Saturday, 22 May 2004

The BBC reports that the IFPI is warning holiday makers that they could be jailed for purchasing pirated CDs in Greece, ahead of the Olympic Games in August. The group has announced its intention to target individual buyers and says it has the support of the Greek authorities. In fact, a buyer was sentenced last week to three months imprisonment after he was found buying 2 illegal CDs. This was the first time an individual buyer had been jailed in Greece. The IFPI has explained that its previous policy was to go after vendors. However, after finding that the Greek authorities were only handing them suspended sentences, it decided to pursue individual purchasers instead.

While the IPKat realises that buyers should know better than to buy copyright-infringing CDs, he thinks imprisonment for private purchases is rather harsh. He’s also disturbed by the inequality of vendors getting suspended sentences while private purchasers are targeted for jail sentences.

Friday, 21 May 2004

Earlier this week in Tillery Valley Foods v Channel Four Television [2004] EWHC 1075 (Ch) Mr Justice Mann refused to grant an interim injunction to stop the broadcasting of a television programme which, Tillery alleged, contained confidential information that should not be publicly aired. Tillery, a subsidiary of French company Sodexho that supplied food to National Health Service hospitals, had been suspected of failing to comply with health and hygiene standards. Channel Four proposed to broadcast a programme, based on investigative journalism, which contained secretly filmed footage taken by a journalist who worked undercover as an employee of Tillery.

Refusing to grant an injunction, the Court took the view that there was no confidential information to protect. Taking the view that this was a defamation action in disguise, the court considered that the filmed activities did not include anything that could be characterised as confidential, for example trade secrets. There was also a human rights issue: under the Human Rights Act 1998, s.12(3) no injunction would be granted to prevent publication where there was little likelihood of Tillery succeeding at the full trial.

The IPKat notices that there is a delicate balance of competing public interests on these facts. There is an obvious public interest in protecting hospital patients against being poisoned by bad food; but there is a countervailing public interest in patients not being discouraged from eating food without which their recovery may be hampered.

The June issue of the European Trade Mark Reports has now been published, somewhat ahead of schedule. This issue contains a curious collection of decisions relating to infringement, validity and the elusive concept of the likelihood of confusion. Two cases are available in English for the first time. They are:

*House of Prince A/S v Lidl Stiftung & Co KG, in which the Court of Appeal of The Hague (The Netherlands) rejected cigarette maker PRINCE OF BLENDS' claim that the competing GOLDPRINCE brand infringed its Benelux registration, remitting to the District Court the nullification claim lodged by the owners of GOLDPRINCE against PRINCE OF BLENDS;

*Ta'am Teva (1988) Tivoli Ltd v Ambrosia Supaherb Ltd and others, where the Jerualem Supreme Court had to rule on the similarity of two marks which had some aural similarity but where one was written in Hebrew letters, the other in English ones.

This issue also features (among other cases) the ECJ Advocate General's Opinion in Case 404/02Nichols, on the registrability of common surnames and Mr Justice Patten's judgment in Intel v Sihra, a UK decision on the protection (perhaps the overprotection) of a well-known mark.

Thursday, 20 May 2004

Findlaw reports that LG Electronics is suing Whirlpool in the US for patent infringement. The South Korean company claims that technology that stops clothes getting twisted together in Whirlpool’s Calypso and Duet washing machines was copied from its patent-protected inventions. Whirlpool, which is itself bringing other patent and trade mark actions against LG, has said that it intends to fight the claims vigorously.

The IPKat is rather puzzled by the fact that, according to the Findlaw article, Whirlpool’s shares went up in value on the day that the patent infringement action was announced.

The IPKat has been playing around with the improved version of the search facilities that OHIM (the Office for Harmonisation in the Internal Market) runs for decisions of the Boards of Appeal, the Opposition Divisions and the Cancellation Division. You can search decisions by all sorts of lovely categories such as trade mark class, legal basis for the decision and real text (this last facility enables you to search cases by name of party, name of representative or anything else that takes your fancy). Well done, OHIM!

The Daily Telegraph reports that John North, a British inventor, has won £17 million in damages from Swedish electrical appliance firm Electrolux after a court accepted that the company "stole" his design for a vacuum cleaner. North, an engineer from Norwich, Norfolk, invented an upright bagless vacuum cleaner and had signed a confidentiality agreement under which he disclosed his idea to Electrolux. The company showed no interest at the time, but a few months later he saw a similar machine in an electrical store.

"I just took it apart and looked at the workings. It was so simple that they thought 'anybody could do this'. We decided to take them on. It took over two years before everything got to a courtroom".

The trial ran for over three weeks in an El Paso, Texas, court before the two parties settled. The jury heard that the new vacuum cleaner sold nearly three million units, amassing profits of more than £58 million. North’s design allowed the vacuum cleaner to exert greater downward force on a surface than previous devices had been able to achieve. Electrolux have reportedly made no provision for this payment to North.

The IPKat commends North for his courage in bringing the action in the United States, where the threat of sky-high damages makes generous settlements easier to achieve, rather than suing in Europe where the courts are relatively miserly.

Wednesday, 19 May 2004

The IPKat is doing a little research on ambush marketing. It seems to him that it's been given a rather bad name and that, if it's done properly and doesn't confuse the consumer, it's actually a useful, pro-competitive and entertaining tool for bringing products and services to the attention of the public.

Can any of our readers come up with a bright, cheerful and morally neutral term by which "ambush marketing" can be referred without any sense of insult or stigma? Something like "opportunity marketing", perhaps, only better. Please post your suggestions below.

... the IPKat still thinks it's worth taking the trouble to find the facts about the state of play in Europe today. One way of doing this is through Arnoud Engelfriet's Ius mentis website, which opens portals on to a selection of Anglo-Dutch IP topics. Of particular interest are his files on (i) granted European business method patents, (ii) software patents under the European Patent Convention and (iii) the patentability of business methods under the European Patent Convention.

Three recent appeals heard by the Court of First Instance of the European Communities are still unavailable in many EU official languages, including English. They are Case T-399/02Eurocermex v OHIM (registration of the shape of a beer bottle), which is currently available only in French, German and Joined Cases T-124 and 156/02Sunrider Corp v OHIM (application to register VITATASTE), currently available only in Spanish, French, Dutch, Italian, German and Portuguese. The IPKat also notices with some anxiety that the European Court of Justice's website has not yet began to make ECJ cases available in any of the nine languages of the new accession States. If anyone reading this blog has any current information concerning translation of ECJ decisions, can he or she please share it with us by posting it as a comment below.

Findlaw reports that US District Judge Anna Diggs Taylor has allowed the rap star Eminem’s claim for copyright infringement to go ahead, although she has rejected state claims for unfair competition and unjust enrichment. Eminem brought the action after Apple used a 10 year-old boy singing his song “8 Mile” in an advertisement for its iPod music player and the iTunes download service without permission after the rapper turned down a request for the song to be used. The defendant’s lawyer has said that no viewer would think that Eminem was endorsing the iTunes service.

The IPKat is a bit unclear about the reporting of this case. He doesn’t see why the fact that consumers would not think that Eminem had endorsed the service would be relevant to a copyright claim. This argument would be more appropriate for a false endorsement/unfair competition claim.

Tuesday, 18 May 2004

The Brand Channel (10 May) has published an article by Shaun Smith, "Ten Ways to Screw Up Your Brand". To the IPKat this looks like a typically slick business school product (have you noticed how articles with titles based on lists so frequently seem to have neat numbers like 5 or 10 in them?). Along the way, Smith writes:

"The brand and the customer experience must be owned by the senior management team".

Monday, 17 May 2004

The IPKat brings tidings of a public morality trade mark decision, concerning the use of swear words (or rather their near equivalents) on T-shirts. Kevin Scrange applied to register FOOK as a UK trade mark for clothing, footwear and headgear in Class 25. Objection was taken to the application under Section 3(3)(a) of the Trade Marks Act 1994, on grounds that the mark was contrary to the accepted principles of morality because it was phonetically very similar (and identical in some dialects) to the swear word FUCK and therefore sent out the message of an offensive word.

Ultimately, the mark was refused registration as it was considered contrary to public policy or morality:

♦ Mr Scrange intended to use the mark on T-shirts. T-shirts are often used for carrying messages and other trade mark matter and, when used as on the front of a T-shirt, the word FOOK could be seen as a simple message or statement. In parts of the UK, aural use of the word FOOK would be interpreted as aural use of the word FUCK and when encountered visually, FOOK would be seen as a visual rendition of the aural pronunciation of the word FUCK. As the word FUCK is a taboo word, in regions of the UK where FOOK was seen as the aural or visual equivalent of the word FUCK, the word FOOK would also be seen as a taboo word.
♦ Decisions of the UK Trade Mark Office and OHIM to register the trade mark FCUK were not relevant. The state of the register does not tell you what is happening in the market and one cannot tell what the circumstances are that cause the Registrar to allow the mark to be put on the register. Likewise, the acceptance for registration of FOOK as part of a limited company name under the Companies Act 1995 was irrelevant.
♦ While it may have been the case that FOOK was a Chinese surname and Chinese word meaning “Blessing”, it would not be interpreted as such by the relevant consumer of the goods in question.
♦ The relevant consumer of the goods would not interpret FOOK as an acronym for “Friends only OK”.
♦ Contrary to Scranage’s claim that FUCK is the public domain as an accepted word that no longer causes offence to the average member of the public, FUCK is a taboo word, a swear word that still causes grave offence to a significant proportion of the general public.
♦ Although some members of the general public would not be offended by the use of the word FOOK as a trade mark and some would find the mark merely distasteful, the use of the word FOOK as a trade mark in the manner proposed by Scrange and in relation to the goods applied for would cause greater offence than mere distaste to a significant section of the general public. Therefore, the mark applied for was contrary to public policy or accepted principles of morality and was barred from registration by s.3(3)(a) of the 1994 Act.

The IPKat thinks that this is a sensible decision. If the word “fuck” isn’t considered to be offensive then what is?

In fulfilment of his duty as chronicler of intellectual property activity on a daily basis, the IPKat wishes to record that, on Sunday 16 May, nothing of any significance happened. Whether this is an isolated incident or turns out to be the harbinger of an entire sequence of nothing, lasting for days or even weeks, remains to be seen.

When pressed for his views, the IPKat had nothing to add. IPKat fact: Google nothing and you’ll find that you can buy “nothing” on ebay – good to know.

Friday, 14 May 2004

The Financial Times reports that Unilever is spending €10 million on a new logo that is meant to make the logo more “open and friendly”. The aim of the rebranding is to meet the company’s new self-proclaimed new mission, which is to "add vitality to life" by meeting "everyday needs for nutrition, hygiene and personal care with brands that help people feel good, look good and get more out of life." From July, the logo will be a giant “U” composed of 25 “icons” that represent elements of Unilever’s business, such as a the sun which is meant to be "the ultimate symbol of vitality"; a bird, "a symbol of freedom" and "relief from daily chores"; and a shirt, which "represents fresh laundry" and "looking good".

From a trade mark point of view, the IPKat applauds this iconography that suggests the qualities of the goods without describing them directly. However, he wonders how consumers will react to these quite conceptual embodiments of Unilever’s brand values.

The Telegraph reports that priests at one of Japan's most famous temples have taken steps to block the sale of a sweet marketed as the "Snot from the nose of the Great Buddha". They have prevented the name being registered as a trade mark office, but have been unable to stop vendors selling the sweets to hordes of tourists who flock to see the giant Buddha in the ancient capital, Nara, in western Japan. Yamamoto Bussan, the company that launched the sweet three years ago, has said that in a recession a product name needs to make a strong impact. A spokesman said some employees had doubts about the name, so it was decided to attach the ultra-polite suffix sama to Buddha's name. But the sweet's packaging shows an irreverent picture of Buddha picking his nose.
Local media have suggested that the sweet is popular because the people of western Japan have an earthy sense of humour, which other Japanese often find coarse. Another famous Nara sweet is called "Deer Droppings". Most Japanese do not adhere strongly to any single set of religious beliefs, typically marrying in Christian services, holding Buddhist funerals and attending festivals at Shinto shrines. Buddhists objecting to the sweet on the grounds of profanity seem to be outnumbered by Japanese who are not put off by the thought of eating something named after snot.

The IPKat notes that national trade mark regimes can prevent the registration of unsavoury or offensive marks, but not their use. Recently his masters drafted an article (not yet published) on how to deal with “no-marks” (marks that, given their offensive nature, should be neither registered nor used). If you’d like to read the draft, click here.

Thursday, 13 May 2004

The INPADOC Patent Gazette has been given a face-lift, as part of the European Patent Office's mandate to increase the quality of its services. INPADOC , the patent information arm of the EPO, is now providing its newsletter online in the three official languages of the EPO: English, German and French.

The IPKat likes the new interior lay-out (the type face is clean and easy to read), but he's not so keen on the acres of green ink that feature so heavily on the publication's cover: they make the newsletter feel like an pamphlet on the joys of ecology.

On 12 December last year the IPKat reported on the battle that R. Griggs had to secure the copyright in the artwork for a logo which it had already registered a UK trade mark. Yesterday there was some follow-up litigation. In R. Griggs Group Ltd v Evans and others (No. 2) [2004] EWHC 1088 (Ch) Peter Prescott QC, sitting once again as a Deputy Judge of the High Court, was asked by the losing party if he could raise a fresh argument that wasn’t raised at trial.

In the first trial the judge said that Griggs was entitled to an assignment to him of the copyright in the logo, without any limitations as to geographical range. The second defendant, Evans ― who had taken a wrongful assignment from the designer who was commissioned to create the logo ― argued that the court had no power to make orders affecting ownership of intellectual property in foreign countries. By that reasoning, although the court could compel the assignment of the British copyright in the logo to R. Griggs, the court did not have jurisdiction to do so in respect of the foreign copyrights in that same logo, since that would be an interference with systems of property ownership created by foreign sovereigns, contrary to principles of international comity.

Peter Prescott ruled that it was not a breach of international comity today, if it ever was, to adjudicate in personam on rights to foreign intellectual property arising out of a contract, even as against a third party purchaser with actual notice of it (or with sufficient notice to cause an honest man to make better enquiries or else stop his hand). This was especially so where the contract to commission the copyright work was governed by English law and the rights existed in manifold jurisdictions. In the absence of a specific rule to the contrary, a claim to the copyright in all countries ought to succeed. In this case therefore, it was not a breach of comity to order Evans to assign the foreign copyrights in the logo to the claimants, instead of leaving the claimants to bring parallel proceedings in numerous countries. What’s more, the claimants had an equity arising out of English contracts which, if the “property” were situated in England, the claimants could have enforced against Evans. Finally, with regard to the foreign copyrights, it had not been shown that the laws of the foreign countries would extinguish that equity and it was not unreasonable to proceed on the basis that they wouldn’t do so. Accordingly, the claimants were entitled to succeed and the assignment in escrow should be delivered by Evans’ solicitors to the order of the claimants.

The IPKat notes that this argument was based on an analogy with real estate: but copyright is different and analogies between real property and personal property are rarely helpful.

The Register reports that Napster has won the backing of the UK's Association of Independent Music (AIM) trade organisation with a deal that will allow the digital music download service to offer 50,000 songs from 50 independent labels on a worldwide basis. Meanwhile, UK-based Napster rival Wippit announced yesterday that it has added Sony to its roster of major label content providers. AIM accounts for over 25 per cent of UK music sales and has over 800 members, only a fraction of whom provide tracks through Napster. AIM said it expects many other members to begin licensing their content to Napster in the coming months. Those licences will be administered by Rightsrouter, a company launched by AIM earlier this year to bring copyright holders and digital music services together and to manage the administration of those licences in the digital domain.

Wippit's deal with Sony will provide the download service with "tens of thousands" of tracks, according to sources close to the company though, as with Wippit's arrangement with BMG, signed earlier this year, it can only supply them to buyers in the UK and Ireland. The BMG deal brought 10,000 songs to Wippit's catalogue. Wippit said it expects to make the tracks available "this summer" ― presumably after Sony has opened its own European online music store, Connect, on 7 June. Connect launched in the US earlier this month.

The IPKat notes the momentum which is sweeping digital rights management (DRM) to the fore of music delivery and wonders how entrenched the operation of DRM systems will be before the European Commission’s attempts to control DRM come into fruition as part of its Information Society policy.

Association for Independent Music here, not to be confused with the now defunct US body (AFIM) of the same name.
Sony Connect here; Only Connect here, here and here

The IPKat is pleased to welcome back an old favourite – patent of the month. Feeling lonely? Do you constantly crave the company of someone small and furry? Then May’s Patent of the Month is for you. According to the claim:

“An object of the invention is to provide pet display clothing having one or more, at least partly transparent, enclosed, pet receiving, passageways or tunnels extending across a surface thereof so that pets traversing the passageways or tunnels can be viewed by a spectator while the clothing is worn by a person”.

This pet display vest allows you to take your best friend everywhere. Don the vest and Nibbles the hamster will be able to satisfy his exhibitionist tendencies while you’ll be safe in the knowledge that he is a happy little rodent.

Wednesday, 12 May 2004

The Register reports that the Council of Ministers has passed the European Software Patent Directive, stripping out all of the amendments made to it by the European Parliament last September. The European Parliament’s version limited the scope of what could be patented to software that supported new physical processes. However, the Council’s draft allows for direct software patentability of computer programs, data structures and process descriptions. It is argued that there are 3 main “sticking points” with the new version: (1) there is no definition of what counts as a technical contribution (computer programs must make a technical contribution to be considered inventive); (2) the issue of the need to ensure interoperability is not dealt with and (3) program claims will be allowed, which will mean that supplying patented code will also be an infringement of the patent, rather than just running it on a computer. However, Jeremy Philpott of the UK Patent Office has said that the new version will not lead to more computer programs becoming patentable. “…There will be no change to UK law. The whole point was that what is patentable today, will be patentable tomorrow, and what is not patentable today will still not be patentable tomorrow” he said.

The IPKat is watching the continued passage with interest. Subject to any last-minute hitches, the draft should be formally passed by the Council of Ministers on 17 May, following which it will return to the European Parliament for a second reading.

Tuesday, 11 May 2004

Coco de Mer Ltd v Chanel Ltd [2004] EWHC 992 (Ch), decided yesterday by Mr Justice Patten in the Chancery Division of the English High Court, is an interesting example of the strategic use of trade mark opposition to delay the inevitable encroachment of a competitor.

Coco de Mer applied to register the mark COCO DE MER in a number of classes, including class 3 (perfumery, essential oils, cosmetics) and class 18 (travelling bags). The term "coco de mer" was the name of a species of palm tree which grew in the Seychelles. Chanel, a well-known retailer of luxury goods, owned the word mark COCO for perfume and fashion accessories. "Coco" was also the name by which Chanel's founder was affectionately known. Chanel successfully opposed registration of Coco de Mer's mark under s 5(2)(b) of the Trade Marks Act 1994 on the ground that the respective marks were similar and that, by reason of their similarity, there was a likelihood of confusion: the hearing officer considered that there would be an association between the two marks which, in the case of the identical classes of goods concerned, would lead consumers to believe that the goods came from the same or economically linked undertakings. Coco de Mer appealed and argued that, in the mind of the average consumer, there would be no perception of any one feature of the applied-for mark which would be dominant and that, therefore the consumer, taking the marks as a whole, would make to association between them.

The judge dismissed the appeal, holding that the hearing officer had been entitled to conclude that COCO was a strong and obvious element in the applied-for mark, when the combination of the conceptual, aural and visual characteristics were taken together. He held that (i)If the average consumer did not have an understanding of what the COCO DE MER mark described, or an ability to translate the words as a complete phrase, the significance of the applied-for mark largely depended upon the impact it made as an invented phrase or words; (ii) The average consumer's lack of understanding also diminished the ability of the words "de mer" to control the impact of what was otherwise the most eye-catching word in the phrase; (iii) The need to consider the mark as a whole did not require the court to give each part of the mark the same weight or significance. The identification of the distinctive features of the mark was part of the function of the global appreciation and a highly relevant factor in determining the likelihood of confusion. In this context the existence of the words "de mer" was unlikely to be sufficient to negative the effect of COCO in the applied-for mark when used on identical types of goods, particularly in a single retail outlet. The average consumer might assume that an economic link existed between the two products and that the goods bearing the COCO DE MER mark were simply a brand or variant of those marked COCO. Accordingly, no proper grounds had been established on which a challenge to the officer's conclusions could be based.

The IPKat considers that the failure of Coco de Mer to register their mark does not mean that they can't necessarily register it in the long run. Chanel opposed the COCO DE MER trade mark application, but it is notable that they have not commenced trade mark infringement or passing off proceedings. On the assumption that Coco de Mer carries on using its COCO DE MER sign as a trade mark, it may eventually be able to gain registration by arguing that that mark has coexisted with COCO in the market without there being any evidence of actual confusion. He also notes that the Court of First Instance of the European Communities has regularly (but not invariably) held that, when considering whether a likelihood of confusion is likely to result from the similarity of two word marks, the relevant consumer is likely to pay particular attention to the beginning of each mark. Thus COCO and COCO DE MER might be regarded as likely to confuse while COCO and MER DE COCO might be regarded as less likely to do so.

Although the Syrian Arab Republic is not a pariah nation within the trade mark community, it has not been seen as a fertile ground for the protection and exploitation of leading Western brands and this perception has not been helped by Syria's absence from the list of countries belonging to the pro-IP World Trade Organization. However in 2001, according to WIPO's Publication A statistics, Syria granted a very respectable 3,818 trade marks, a figure exceeding that of several small European economies as well as Egypt.

The IPKat welcomes Syria's recent deposit of instruments of accession to both the Madrid Agreement and (more importantly) the Madrid Protocol, which will make it easier for foreign businesses to secure trade mark protection in Syria. Both Madrids come into effect for Syria on 5 August 2004.

For Syria's "shiny brilliant brand" in the cool world of refrigeration click hereOther leading Syrian brands here and here

The IPKat has just received volume 1, issue 1, of two new titles: Advertising, Marketing & Branding Law Journal and Life Sciences Law & Business, published six times a year by Legalease. At £295 and £315 respectively, these slim magazines (24 pages, inclusive of Legalease's own advertisements) seem quite dear. However, they both look quite promising in terms of their content. Advertising, Marketing & Branding Law Journal reminds the IPKat of the fate of the late and not greatly lamented Journal of Advertising and Marketing Law and Practice, which endured a brief and sporadic existence in the UK in the 1980s. The market for literature on this subject is surely larger and more sophisticated now than it was then, but titles in the field of advertising and marketing law have, sadly, never really thrived. Life Sciences Law & Business looks as though it may have a brighter and more profitable future, since its target market includes pharma and biotech companies.

According to the Electronic Frontier Foundation, moves are afoot in the USA to amend the Digital Millennium Copyright Act in favour of consumers. Representatives Rick Boucher and John Doolittle are reintroducing a bill that, if passed, would lead to fair use defences to circumvention of digital right management measures similar to those under traditional copyright law. Exceptions to the DMCA regime are proposed for non-copyright infringing uses (such as enabling a a DRM-protected work to be read on another reader) and for scientific research. The bill also calls for works which have been protected by DRM to be labelled so that consumers can know that the goods which they are buying are copy-protected before they buy them.

The IPKat is generally in favour of fair use defences. Likewise, he sees no objection to consumers being told the true nature of the products they are buying. He waits with interest to see if this bill will get off the ground.

Monday, 10 May 2004

Ananova reports that Casablanca has seen its first real Rick's Café open its doors. The restaurant is named after the cafe from the 1942 classic film Casablanca,starring Humphrey Bogart and Ingrid Bergman. The café is owned by Kathy Kriger, a former US diplomat and entrepreneur who worked at the US Embassy in Morocco's capital, Rabat.

Ms Kriger has invested around $1m (£600,000) in US and Moroccan funds into the venture. She claims to have studied the famous film extensively, to work the details depicted in the fictional cafe into her real one. She said that, if Bogart could come back, she would know where to put him. "I'd put him at the bar where I sit in the corner, there's a dark corner with a very cosy little lamp, and from that corner you can see who comes in the door”.

The IPKat marvels at the intellectual property issues that this simple venture raises. Morocco, a member of the Berne Convention http://wipo.int/clea/docs/en/wo/wo001en.htm since 1917, provides protection for literary and artistic works until the end of the fiftieth year following the death of the author: but does “artistic work” include the scenery for Rick’s Café? As to copyright in the film, is the making of a café from a film of a stage café a reproduction of a substantial part of the film itself? Is the name RICK’S CAFÉ registrable as a trade mark for restaurant services, given its heavy association with the Casablanca film? Finally, can Ms Kriger register the trade dress of the inside of Rick’s Café as a trade mark?

Sunday, 9 May 2004

The BBC reports that illegal downloading of films and TV programmes has tripled in the past year, from 570,000 to 1.67 million. While the industry has pointed out that the impact on its sales could be enormous, it is not overly worried because visual downloads tend to be of inferior quality and are very slow to carry out. However, the growth of broadband internet connections could lead to more downloads as downloading becomes faster. Nonetheless, DVD sales increased in 2003. Lavinia Carey, director of the British Video Association has said "The film, TV and video industries are working closely to pre-empt the threat from online piracy…As long as we can continue to make our traditional product attractive and future online offers affordable and easy, we hope to avoid the worst of the damage."

The IPKat welcomes this refreshing attitude and is glad that the BVA is looking to improve its own product as a proactive way of combating downloading. He hopes that the BVA will continue to subscribe to this approach.

On Thursday, the House of Lords delivered its opinion in favour of Naomi Campbell in her privacy action against the Daily Mirror. After Campbell stated publicly that she did not take drugs, The Mirror published stories, together with a photograph, about her attendance at Narcotics Anonymous meetings. Campbell sued for breach of confidence and breach of the Data Protection Act 1998, alleging the wrongful publication of private information and claiming damages. The Mirror denied liability, maintaining that there was a public interest in correcting the false impression caused by Campbell’s original statement and that its publication was protected by freedom of speech.

The trial judge awarded modest damages on the basis that The Mirror must have known that the information about Campbell's attendance at NA was confidential and that there was no overriding public interest in publishing it. The Court of Appeal reversed that decision, holding that so long as publication of particular confidential information was justifiable in the public interest, journalist had to be given reasonable latitude as to the manner in which the information was conveyed and that this would justify the publication of peripheral information.

On appeal to the House of Lords, Campbell conceded that her previous public statements about drugs precluded her from claiming protection for the information that she had taken drugs and was seeking treatment. However, Campbell argued that information about the details of the treatment she was receiving for addiction at NA and an accompanying photograph were entitled to protection by reason of their private nature because, in relation to that information, Campbell's right to privacy under the European Convention on Human Rights, Art.8 outweighed the competing interest of Then Mirror’s freedom of expression under Art.10.

The House of Lords, by a three-to-two majority, allowed Campbell’s appeal. The court agreed with the trial judge that the information in issue was all private and confidential. The Mirror ought to have known that there was a reasonable expectation that the information in question would be kept confidential (citing A v B & another [2002] EWCA Civ 337, with approval). The Court of Appeal was wrong to hold that “peripheral information” was within the margin of appreciation which should be left to journalists and that the Mirror's freedom of expression served to justify the publication of all the information. The publication of the fact that Campbell had taken drugs and was seeking treatment was necessary to set the record straight given her previous statements, but the additional information ― including the photograph ― was an unjustified intrusion into her private life. Balancing the competing interests, Campbell's right to privacy under the European Convention on Human Rights, Art.8 outweighed the Mirror’s freedom of expression under Art.10.

The IPKat says that the balance between celebrity privacy and freedom to communicate information seems to have shifted irretrievably in favour of the individual. This is a desirable outcome. Even if celebrities do seek publicity, their high profile is no justification for the publication, in relation to them, of information which would be regarded as unnecessarily invasive if it were published in respect of non-celebrities.

Friday, 7 May 2004

A WIPO circular of 5 May announced that Pakistan, having deposited an instrument of accession on 22 April, will accede to the most recent text of the Paris Convention on the Protection of Industrial Property with effect from 22 July 2004. Pakistan has been a member of the World Trade Organization since 1995.

The IPKat welcomes Pakistan's participation in the Paris Convention, which will provide an enhanced level of protection for IP owners.

Four new pieces of subordinate trade mark legislation come into force on Wednesday 5 May in the UK. They are as follows:

(i) The Trade Marks (Proof of Use, etc) Regulations 2004 (2004 No. 946): amends the Trade Marks Act 1994 and introduces a proof of use regime into the UK opposition and invalidation procedures. Also, following the two judgments of the European Court of Justice in Case C-292/00Davidoff v Gofkid and Case C-408/01Adidas-Salomon v Fitnessworld, the text of ss 5(3) and 10(3) of the Act has been brought into line with that court's interpretation of Article 5(2) of Council Directive 89/104. Section 10(3), which protects well-known marks, now reads as follows:

10(3) A person infringes a registered trade mark if he uses in the course of trade a sign which-

(a) is identical with or similar to the trade mark,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The IPKat feels that, particularly in the case of the first of the four statutory instruments, we have seen an example of legislative amendment by stealth. The fact that so many leading practitioners were unaware of the impending changes until shortly before (or in some cases shortly after) they happened is somewhat worrying.

Tuesday, 4 May 2004

The IPKat is continuing to relish the delights of the INTA Annual Meeting. He hasn't just been networking though, he has also been sampling the educational programme. Today he attended a session the fundamentals of making a dilution claim, delivereed by Sandra Edelman (Dorsey & Whitney LLP) and Rodrick J Enns (Enns & Archer LLP). The moderator was Mark S VanderBroek (Troutman Sanders LLP). He learnt about the impact of last year's Victoria's Secretcase, decided by the Supreme Court. One big question is whether, following that case, a claimant can succeed in a dilution claim just by arguing that the defendant has a mark that is identical to the claimant's famous mark, or if instead, the claimant must also show that there is something else that causes consumers to associate the earlier and later marks. Although various post-Victoria's Secret cases have found dilution merely on a showing of identical marks, it was pointed out that in all of those cases there was activity that would have been classed as traditional infringement as well. In other cases identity of the marks has not been enough. Furthermore, there have been no successful dilution cases where the two parties' marks have not been identical.

The IPKat points out that there is a parallel here to the development of the UK's law on dilution-style infringement. In the UK, particularly following the ECJ's decision in Adidas v Fitnessworld, courts and the Trade Mark Registry require more than just the fact that the appearance of a second mark on the market makes the first mark less distinctive. Instead, in most cases they have required there to be something to link the two uses together in the minds of consumers, the underlying fear being that too liberal approach would involve the court "throwing away" the specification of the goods for which the earlier mark is registered.

Monday, 3 May 2004

The IPKat is enjoying pressing the flesh at the 126th INTA Annual Meeting at Atlanta, Georgia. He has spent much of today tackling the sordid subject of trade mark dilution. Why should trade marks be protected against dilution, and is the law in a state of confusion in the US and the EU, the IPKat wants to know. Is the rationale for dilution moral (in other words, is dilution inherently wrong in itself?) or does it exist to ensure the continued well-being of the market, viewed either from the point of view of the consumer, or from that of competitors in the market-place? There seems to be no-clear cut consensus, at least among those of the 7,000 attendees whose opinion the IPKat has sought. However, exciting developments in this field are imminent. The INTA has completed a major study of the subject and has presented proposals for reform of the US law, which it expects to be adopted as a legislative bill in the near future. Also, watch out for a new development in the UK, which the IPKat will blog on Wednesday 5 May.

Sunday, 2 May 2004

... so the IPKat will be enjoying the International Trademark Association's 126th Annual Meeting which is being held this week in Atlanta, Georgia. We will try not to interrupt our normal blogging activities and we look forward to giving you some exciting new insights into what's going on in the world of trade marks.

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